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The Regents of the Univ. of New Mexico V. Knight, 02-1018 … FEDERAL CIRCUIT PATENT LAW CASE UPDATE The Regents of the Univ. of New Mexico v. Knight, 02-1018 (Fed. Cir. Feb. 28, 2003) (Lourie, J.) Inventor-Employees at the University of New Mexico (UNM) did not own various patents because: (i) the university’s patent policy stated that inventions belong to the university; and (ii) other documents signed by the inventors ceded ownership to the university. The inventors’ counterclaims for damages, including withheld royalties, were not barred by Eleventh amendment sovereign immunity because the university sued in Federal court, waiving its immunity for compulsory counterclaims. Dr. Scallen and Dr. Knight (the “Inventors”) under Federal Circuit law, to limit the scope of the undertook cancer research at UNM from 1983 to waiver to “claims in recoupment.” Federal Circuit 1985. This resulted in five patent applications filed law applied: in 1990. In 1991, the Inventors assigned the because the goal of promoting national applications to UNM and signed Co-Inventor uniformity in patent law would best be Agreements. In 1992, UNM filed five CIP served by applying our own law. Were we applications, but the Inventors never executed to apply regional circuit law, the specific assignments for the CIP applications. counterclaims that a defendant in a In 1994, the Inventors lost funding for their lab. state-initiated patent suit would be entitled UNM then licensed the technology to a third-party. to assert, and for which the state would be In 1999, the third-party asserted breach of an potentially liable, might vary with the ownership covenant in the license due to the missing regional circuit in which the case originated. CIP assignments. UNM then sought declaratory Application of our own law, however, would judgment against the Inventors. They brought ensure uniformity concerning which various counterclaims, including counterclaims for counterclaims may be asserted against a withheld royalties. The district court held that UNM state that seeks to litigate its patent rights in owned the patents. It also held that UNM waived its federal court. sovereign immunity for “claims in recoupment Based in part on guidance from the Supreme Court arising out of the same transaction or occurrence as in Lapides v. Board of Regents of the University [UNM’s] claims.” But, as the case developed, UNM System of Georgia, 122 S. Ct. 1640 (2002), the court only brought claims for declaratory and injunctive found that there were policy problems with allowing a relief. As a result, the district court dismissed the state to limit counterclaims to “counterclaims in Inventors’ counterclaim for damages as barred by recoupment, i.e., counterclaims that arise from the Eleventh Amendment immunity. same transaction or occurrence as the state’s claims, The court upheld the patent ownership ruling. seek relief of the ‘same kind or nature’ as do the Under New Mexico law, the employment agreement state’s claims, and seek an amount not greater than incorporated the patent policy. The policy stated the amount sought in the state’s claims.” that “inventions and discoveries belong to the Rather than allow a state to misuse its immunity University.” The Inventors further consented to the with “counterclaims in recoupment,” the court held ownership transfer, including the CIP applications, that a broader scope of waiver applied. UNM by executing the original assignments and waived immunity for all compulsory counterclaims. Co-Inventor Agreements. The latter specifically Existing Federal Circuit law dictated that royalty stated that “the University is the owner of the counterclaims were compulsory to patent ownership Inventions.” claims. The Inventors’ counterclaims were for The court reversed the district court’s ruling on royalties and arose from royalty-granting language UNM’s waiver of sovereign immunity. It was error, in the patent policy, and thus were not barred. The University of Houston Law Center’s Institute for Intellectual Property and Information Law is pleased to provide this information on patent law decisions .
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